WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royale Indian Rail Tours Limited v. Supinder Singh
Case No. D2010-1193
1. The Parties
The Complainant is Royale Indian Rail Tours Limited of New Delhi, India, represented internally
The Respondent is Supinder Singh of Skillman, New Jersey, United States of America, represented by himself.
2. The Domain Name and Registrar
The disputed domain name <maharajasexpres.com>(the “Disputed Domain Name”) is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2010. On July 20, 2010, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On the same day, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the identification of the concerned registrar, the Complainant filed an amended Complaint on July 26, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2010. The Response was filed with the Center on August 13, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on August 19, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On September 8, 2010, the Complainant filed a supplemental submission in the form of an e-mail communication, purporting to briefly address some of the issues raised by the Respondent in its Response. Given the late date of this submission, the Panel declines to consider it, in line with the Panel’s discretion under paragraph 10(d) of the Rules.
4. Factual Background
The Complainant has been in business operating a luxury train in India called the “Maharaja’s Express” since approximately February 2009. It registered in that month a range of domain names incorporating the “Maharaja’s Express” name and mark, including <maharajasexpress.com> and various variants on this theme as well as various second level domain names in ccTLD spaces such as <maharajasexpress.in>. It also filed numerous trademark applications in September 2009 for its device mark which included the text MAHARAJAS EXPRESS.
The Respondent also has a business operating a luxury train service in India, but its train is called the “Royal Rajasthan On Wheels” and it promotes its train service through a website at “www.palacetours.net”. The Disputed Domain Name resolves to the Respondent’s main website.
5. Parties’ Contentions
The Complainant submits that it has expended substantial amounts on advertising its luxury train service under the MAHARAJAS EXPRESSS name and trademark in various countries including in the United States of America, Europe, Canada, Australia and France. It submits that it has actively used this name and trademark since the commencement of bookings in March 2009 and has undertaken various promotional activities including public launches for its service at exhibitions outside India. It says that in addition it has promoted its business under this name on its website at “www.maharajasexpress.com” and has various pending trademark applications for the MAHARAJAS EXPRESS trademark. In these circumstances the Complainant says that it has demonstrated that it owns trademark rights for the purposes of the Policy.
The Complainant says that the Disputed Domain Name is confusingly similar to its MAHARAJAS EXPRESS name or trademark as it simply consists of a clever misspelling of the mark by omitting one letter “s”.
As far as rights or legitimate interests are concerned, the Complainant says that it is unaware of the Respondent having registered any trademark for a name or mark that is the same or confusingly similar to the Disputed Domain Name or that it has used such a name or mark in any of its publicity or advertising materials. It says that there is nothing to indicate that the Respondent has any rights or legitimate interests in the Disputed Domain Name and it is notable that it resolves to a website advertising the Respondent’s Royal Rajasthan On Wheels luxury train service.
The Complainant says that the Respondent registered the Disputed Domain Name around 20 days after it registered its own domain name. It says that it is apparent from the Respondent’s choice of a domain name which is no more than a misspelling of the Complainant’s domain name and from the fact that the Disputed Domain Name resolves to a website that advertises the Respondent’s train and with a booking link to the Respondent’s other website at “www.palacetours.net”, that the Respondent registered the Disputed Domain Name purposefully and in bad faith and has subsequently used it in bad faith to deceive and redirect users seeking to access the Complainant’s website. As a consequence the Complainant submits that the Respondent has fulfilled the requirements of paragraph 4(b)(iv) of the Policy or has purposefully sought to disrupt the Complainant’s business under paragraph 4(b)(iii) of the Policy.
The Respondent submits that it was not aware of the Complainant’s domain name registrations in early 2009 and that the Complainant did not commence using its domain name until some time later. The Respondent says that it started using the Disputed Domain Name prior to the Complainant’s first use and that the Complainant’s evidence of advertising does not confirm that it advertised or spent approximately USD $500,000 on advertising containing the domain name< maharajasexpress.com>. The Respondent further says that the Disputed Domain Name is not remotely similar to the <rirtl.com> domain name that it says was promoted by the Complainant in its advertising.
As far as no rights or legitimate interests the Respondent disputes that it has no such interests. The Respondent submits that it was not aware of the Complainant’s alleged rights in the name “Maharajas Express” or in its domain name <maharajasexpress.com> at the time of registration of the Disputed Domain Name and therefore its registration was not in bad faith. The Respondent says that it has no interest in the Complainant’s product and has not used the Disputed Domain Name with the intention of causing people to confuse the Complainant’s product with its product. As far as the Respondent is concerned the Complainant is promoting <ritrl.com> and not MAHARAJASEXPRESS or <maharajasexpress.com> and the Respondent says that it never intended to trade on the Complainant’s name or disrupt its business.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant does not own trade mark registrations for its MAHARAJAS EXPRESS trade mark but in the Panel’s opinion there is more than sufficient evidence to support its claim to common law usage rights as an unregistered trade mark under the Policy. The Panel notes in this regard that the Complainant operates its train service under this name in India, has provided evidence of advertising in various ways and in various jurisdictions sufficient to support its claim that it uses MAHARAJAS EXPRESS as a trade mark. Additionally, it has filed a number of trade mark applications for this mark in India. The Panel notes that the Disputed Domain Name differs by only one letter from the Complainant’s MAHARAJAS EXPRESS trade mark and the Panel finds that it is confusingly similar to that mark. Accordingly, the Complainant succeeds in relation to the first element of the Policy.
B. Rights or Legitimate Interests
Under the Policy the Complainant is required to make out at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Names and it is then for the Respondent to rebut this case.
The Panel considers that the Complainant has made out its prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has submitted that it has not aware that the Respondent has used “Maharajas Express” as its name or trademark or obtained registered rights in this mark. It says that the key point, with which the Panel agrees, is that the Respondent uses the Disputed Domain Name to resolve to its website advertising the Respondent’s Royal Rajasthan On Wheels luxury train service. The Respondent offers no substantive, or in the Panel’s view, persuasive rebuttal except to suggest that it was not aware of the Complainant’s interest in the MAHARAJAS EXPRESS name or mark at the time that it registered the Disputed Domain Name. In these circumstances and considering that there is no evidence that the Respondent has made a bona fide use of the Disputed Domain Name or of “Maharajas Express” as a name or mark and in view of the Panels findings regarding bad faith below, the Panel finds that the Complainant succeeds in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
The Respondent suggests that he was unaware of the Complainant’s MAHARAJAS EXPRESS mark at the time that he registered the Disputed Domain Name. However, in circumstances that the Disputed Domain name differs from the Complainant’s mark by only one letter, was registered shortly after the Complainant’s domain name registration and public branding announcement, was registered by the Respondent who was about to start up a competing luxury train service in India and was subsequently used by the Respondent to resolve to the Respondent’s own website advertising its Royal Rajasthan On Wheels luxury train service, the Panel does not accept that the Respondent was unaware of the Complainant’s name or mark or prior registration of the Disputed Domain Name. The suggestion that <maharajasexpress.com> was unavailable as a domain name and therefore it chose in good faith a misspelled version without one “s” is simply not credible.
In this Panel’s assessment, despite Respondent’s protest to the contrary, which the Panel does not find persuasive on the submitted evidence, this is a classic case of “typosquatting” in which the Disputed Domain Name differs from the Complainant’s name or mark by one letter and is potentially used to confuse Internet users into being attracted to the Respondent’s website where it is advertising its competing service. The Panel does not accept the Respondent’s submission that it had no intention to confuse Internet users in this way and in all the circumstances as outlined above infers that the Respondent can only have sought to confuse internet users with the Disputed Domain Name and to attract them to its own website in order to promote its own luxury train service to them. Accordingly, the Panel finds that on the present record, the Complainant has made out its case under paragraph 4(b)(iv) of the Policy and the Complainant succeeds under the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <maharajasexpres.com> be transferred to the Complainant.
Dated: September 2, 2010